Wednesday, 19 October 2011

The opponent filed a petition for review after Board 3.2.08, in decision T 1440/08 (also reported on this blog), had maintained the patent in amended form. According to the opponent, the Board had violated its right to be heard by completely misunderstanding one of its arguments.

The petitioner also filed an article by Rüdiger Zuck (GRUR Int. 2011, p. 302) to support its opinion that the EPC did not require the Boards to interpret rules for the application of an extraordinary remedy (such as petitions for review under A 112a) in a strict and narrow (streng und eng) manner.

The Enlarged Board (EBA) found the petition not to be clearly inadmissible and then examined its allowability:

*** Translation of the German original ***

[2] The EBA is of the opinion – without having to depart from its previous case law and in agreement with the established case law of the Boards of appeal and of national jurisdictions (by which, however, it is not bound) – that for the right to be heard within the meaning of A 113(1) to be granted, it is not sufficient that the parties have the opportunity of commenting (on the facts and considerations that are relevant for the decision) but these comments must also be taken into account, i.e. examined as to their relevance for the decision (see R 19/10 [6.2] cited by the petitioner, who agrees).

[3] This legal understanding is not in conflict with the decisions of the EBA according to which it is sufficient for the purposes of A 113(1) that the party concerned was aware of the arguments put forward by the adverse party, had an opportunity to answer them, and makes no contention that the Board of Appeal refused to hear them (see in particular R 18/09 [12]): this statement refers to cases where it had to be examined whether a party had not commented (on facts and considerations relevant for the decision) because it had been hindered from doing so by objective obstacles (as found in R 7/09) or by the way in which the Board had conducted the proceedings.

[4] The present case contrasts with this situation because there is no doubt that the petitioner had the opportunity to express its opinion and has also done so. The petitioner rather points out that its submissions relating to a matter decisive for the factual decision (i.e. the teaching of document D21 […]) have been completely misunderstood by the Board and, as a consequence, have not been taken into account in the decision making process.

[5] The Board accepts [the argument of] the petitioner [according to which] the – correct, as the petitioner admitted – presentation of its relevant submissions [in the decision …] is only an indication (Indiz) for the fact that [the petitioner’s] factual submissions have been taken into account in compliance with A 113(1). However, in order to [make the EBA] doubt or even state the contrary – here: that the Board nevertheless had misunderstood the relevant submissions of the petitioner and, as a consequence, had not taken it into account as it should have – there have to be concrete and unambiguous indications in the decision under consideration.

The Board also accepts that such a review (Überprüfung), even if it refers to “facts” in a very general sense, does not constitute a review (“evaluation” (Wertung)) of the factual correctness of the decision.

[6] The petitioner argues that the fundamental (ursächlich) misunderstanding is to be found in that, in contrast to the explanations under point 5, last paragraph on pages 18 and 19 of the reasons for the decision, it had never argued that D21 taught that the clutch disk was to be inclined (angestellt).

[7] In the place cited the following is said on the disclosure of D21:

“D21 discloses a clutch wherein the contact pressure plate is slightly inclined … When transferring this teaching to the torsional vibration damper according to D2 the skilled person would also incline the clutch disk such that …

The prior art does not disclose that the design (Gestaltung) of the clutch disk gives rise to problems, so that D21 cannot incite the skilled person to transfer the inclination of the clutch disk to the flywheel mass element. As said documents only disclose (if at all) that a plane contact pressure plate is inclined, they cannot incite [the skilled person] to provide a concave course or a return (Rücknahme) towards the flywheel mass element …”

[8] Apart from the fact that these explanations cannot only be understood such that only D21 teaches that a clutch disk is to be inclined (whatever that means from a technical point of view), the petitioner is not mentioned at all in this passage. Therefore, one can at most conclude from this passage that the Board has not adopted the point of view of the petitioner, or simply that, having considered the whole relevant prior art (including D2) that it has found auxiliary request 2 to involve an inventive step and, consequently, decided against the petitioner. Therefore, there is no factual or textual indication that these statements and conclusions were based on a different understanding of the relevant submissions of the petitioner than the one (correctly) exposed in point IV d) of the decision. The assertion of the petitioner that in the present case the Board had misunderstood the explanations of the petitioner that were relevant for the decision and, therefore (or for what reasons ever), had not taken them into account as would have been required by the right to be heard (A 113(1)) does not have any support.

[9] Therefore, the decision on the present petition does not require the Board to dwell on the question of whether a misunderstanding of the kind alleged by the petitioner, if established, could at all qualify as violation of the right to be heard within the meaning of A 112a(2)(c) or whether it had to be considered as error – which as a matter of principle is not open to review in proceedings under A 112a.

Nor is there any reason to review the allegedly too “strict” interpretation or application of the grounds for setting aside [a decision] established by A 112a, as requested by the petitioner. It is indeed true and legitimate that as a rule, a petition under A 112a is filed with the objective of obtaining that the decision taken by the Board of appeal be amended with regards to content in favour of the petitioner. However, A 112a has not changed the fact that the Boards of appeal alone are the last instance for assessing facts (Sachinstanz) in proceedings under the EPC. The EBA cannot deviate from this fact, even by means of interpretation. It rather has to limit itself strictly (strikt – und insofern “streng”) to the exhaustive [list of] grounds provided by the EPC. The factual correctness of the facts and conclusions on which the decision to be reviewed is based cannot – not even indirectly – be object of a review under A 112a. Only the Boards of appeal can, possibly after setting aside the decision and re-opening proceedings pursuant to A 112a(5), decide on that matter – as a matter of principle the EBA is not competent to do so.

ORDER

For these reasons it is unanimously decided that:

The petition for review is rejected as clearly unallowable.

Should you wish to download the whole decision (in German), just click here.

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